April 1, 2009

Gamed

Paul
J. Bryan filed a "patent application [which] describes a 'game board and game
having a touring band theme.'" He claimed "a game board and game." The examiner
found an obvious combination of "a musical band-themed board game with nearly
the exact structure that Mr. Bryan claimed." The examiner's rejection was upheld
on BPAI appeal. Bryan took it to the CAFC. Apparently, without legal advice.

On appeal, Mr. Bryan... reiterates the same primary argument that he made
to the Board--that the various "printed matter" indicia on his game cards and
game board are functionally related to the structural elements of his
claimed game apparatus. On this basis, Mr. Bryan argues that Board
consequently erred in ultimately determining that the printed matter could
not patentably distinguish his claimed invention from the prior art.
Specifically, according to Mr. Bryan, the printed matter on his game cards
allow the cards to be "collected, traded, and drawn"; "identify and
distinguish one deck of cards from the other"; and "enable[ ] the cards to
be traded and blind drawn."

Because there is no "new and unobvious functional relationship between
the printed matter and the substrate," we agree with the Board that the
printed matter in Mr. Bryan's claims cannot render his claimed structure
unobvious. In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004) (quoting
In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)). We therefore
affirm the Board's decision... Mr. Bryan emphasizes that the printed matter
set out in the claims--e.g., the "Consequence," "Band Member," and "Band
Equipment" language--is the distinguishing feature over the prior art. This
language and the substance of the printed matter, however, cannot impart
patentability, as it is "'useful and intelligible only to the human mind.'"
In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re
Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)). Indeed, the printed matter
does not depend on the game's structural elements, and the game's structural
elements do not depend on the printed matter. See Ngai, 367 F.3d at
1339 ("[T]he printed matter in no way depends on the kit, and the kit does
not depend on the printed matter."). Thus, the printed matter does not
exploit, or interrelate with, the underlying structural elements and,
therefore, is not "functionally related to the substrate." See id.

While Mr. Bryan asserts that the printed matter is functionally related
because, for example, it allows the cards to be "collected, traded, and
drawn" during game play, these types of arguments do not pertain to what he
claims and seeks to patent--the structure of the game apparatus.
Rather, these arguments pertain to the patentability of methods or
processes of playing the game, which are irrelevant to the apparatus
claims at issue. Indeed, if we were to accept Mr. Bryan's arguments, it
seems anyone could patent the structure of a pre-existing game simply by
changing the game's theme without changing its structure. See Ngai,
367 F.3d at 1339 ("If we were to adopt [the applicant's] position, anyone
could continue patenting a product indefinitely provided that they add a new
instruction sheet to the product.").

Affirmed.

Posted by Patent Hawk at April 1, 2009 8:44 PM
| Prior Art

Comments

This one goes to 11...

Posted by: Just sayin' at April 2, 2009 12:47 AM

... it is "'useful and intelligible only to the human mind.'"

But then again, Abele's display of X-ray attenuation data is nothing more than a bunch of dots on a TV screen that is "'useful and intelligible only to the human mind.'"

So does In re Bryan overrule In re Abele?

Posted by: step back at April 2, 2009 4:54 AM

"This one goes to 11..."

He might be pro se, cut him some slack already.

"But then again, Abele's display of X-ray attenuation data is nothing more than a bunch of dots on a TV screen that is "'useful and intelligible only to the human mind.'"

So does In re Bryan overrule In re Abele?"

If I recall Abele correctly, his distinguishing feature was not the shapes of the xray data, i.e. what it spelled out, but rather in the calculation he was performing. So no.